Taking a gamble: proof of suitability and intention to put an invention into effect

Judgment was given today by Mr Justice Lewison in Cranway Ltd v Playtech Ltd & others [2009] EWHC 1588 (Pat), a decision of the Patents Court for England and Wales. Cranway claimed that Playtech and the Tote infringed their online gambling patent (EP 0625760B1). The patent related to an interactive, real time, realistic "home" computer gaming system using general purpose computers. Playtech and the Tote denied infringement and challenged the patent's validity for lack of novelty, lack of inventive step and for not being an invention within the meaning of the Patents Act 197.

Holding that the patent would have been infringed, but was however invalid for obviousness and for not being for an invention, the judge had occasion to contemplate the Patents Act 1977, Section 60(2):

" ... a person (other than the proprietor of the patent) also infringes a patent for an invention if, while the patent is in force and without the consent of the proprietor, he supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom" (emphasis added).

This phraseology raises an important issue when it comes to establish proof of suitability and intention, since they are far from being the same thing. As he said at para.156:

"Whether means are suitable for putting an invention into effect must be a purely objective test. But whether they are intended to put an invention into effect cannot be wholly objective. Only human beings can have intentions, although their intentions may be attributed to other legal persons, according to rules of attribution. Thus this limb of the test must depend on the subjective intention of someone. A supplier of essential means might reasonably be supposed to know what the intention of his immediate counter-party is. But it would be a far stronger thing to expect him to discern the intention of a person far down the supply chain. Moreover, at the time of the supplier's supply of the essential means the person who ultimately forms the intention to use the means to put the invention into effect may not be ascertainable and he may not have formed that intention. It thus seems to me to be more likely that section 60(2) was directed to a supply of essential means to a direct infringer rather than to another secondary infringer. ... ".